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On June 18, 2012, the Federal Court of Canada issued a Judgment
and Reasons for Judgment in a prohibition proceeding between
Allergan and Apotex involving Allergan's brimonidine +
timolol combination product (COMBIGAN) and Canadian Patent No.
2,440,764. This is not the first time the '764 patent has been
involved in litigation under the Patented Medicines (Notice of
Compliance) Regulations. In November 2011, Justice
Crampton held that Sandoz's allegations in respect of the
same '764 patent were not justified and granted a
Prohibition Order preventing the Minister of Health from approving
Sandoz's ANDS until the expiry of the '764 patent in
2023 (2012 FC 1316).
On the evidence before him in the Apotex matter, Justice Hughes
concluded that Apotex's allegation of obviousness was justified
but nevertheless granted a prohibition order against Apotex,
stating as follows:
CONCLUSIONS AS TO OBVIOUSNESS
[189] As is apparent, I would find on the evidence before me
that Apotex's allegations as to obviousness are justified.
In this regard, my findings are in line with the decision of
O'Reilly J of this Court in Merck & Co Inc v Canada
(Minister of Health), 2010 FC 1042, where he held that
a similar patent directed to the earlier combination product
COSOPT was obvious, and with the decision of Justice Floyd of
the High Court of Justice, Chancery Division, Patents Court of
England and Wales in Teva UK Limited v Merck & Co Inc,
supra, where he held the European COSOPT patent to be
obvious.
[190] That is, however, not the end of the matter.
[191] I must consider the question of comity. Is the evidence
and argument before me "different" from or
"better" than the evidence and argument before Crampton J
in Sandoz? There is no real way to measure
"different" or "better". The evidence and
argument is of the same kind. In some cases evidence and
argument is more one of quality to the best that can be discerned
from the record that I have, and this Court not having the
record as to what was before Crampton J.
[192] If I were to dismiss this application on the basis that
Allergan did not discharge its burden ofproving that Apotex's
allegations as to obviousness were not justified; then, within a
matter of hours - if not days – the Minister would
give Apotex a Notice of Compliance, and the issue as to
whether the Court should grant a prohibition order would be
moot. The Court of Appeal, in all likelihood, would not hear
an appeal.
[193] I believe that there have been serious issues raised
as to comity. The somewhat contradictory decisions of the Court of
Appeal should be considered by that Court and
clear instruction given as to how, in an NOC context, previous
decisions of a Court on the same issues respecting the same
patent, should be considered.
[194] The only practical way to get the matter before the Court
of Appeal is for me to grant the Order for prohibition in the
likely expectation that Apotex will appeal.
[195] In the circumstances, I will not award costs to any
party.
A copy of the Reasons for Judgement and Judgment may be found
here.
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